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The Gibson vs. Dean lawsuit

Posted By: p90jr

The Gibson vs. Dean lawsuit - 06/24/19 03:54 PM

GP: Gibson Sues Dean, Luna Guitars for Trademark Infringement

I'm surprised this hasn't been posted here since it's all anybody is talking about (and arguing over) in facebook groups, etc.

In the multimillion dollar suit, the storied guitar manufacturer reportedly states that the companies violated its Flying V, Explorer, ES and SG, "Dove Wing" headstock design, "Hummingbird" name and "Moderne" trademarks.

Gibson is said to be seeking Armadillo’s profits, damages sustained by Gibson and the costs of the action. The company can also pursue statutory damages of up to and including $14 million—$2 million for each of the seven violations.

So will it stop with Dean? Isn't Hamer just as "guilty?" And ESP? And Schecter? And Jackson? And anybody else who ever made a guitar in the shape of a V, Explorer, ES (? Double or single cutaway?) and SG?

I, personally, suspect the creditors that took over the company saw millions or billions to be made in "patent trolling," moreso than from the sale of guitars.

And that Mark Agnesi video that Gibson posted to youtube "warning" people to "play authentic" was cheesy.
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/24/19 05:05 PM

The question about everyone else is kinda the point. If Gibson prevails, the others will be next in the crosshairs. But I don’t think they will, given the results of the previous lawsuits n what is and what is not trademarkable in guitar design.

They MIGHT win on the headstock design, but I doubt they’ll get any other victories.
Posted By: d / halfnote

Re: The Gibson vs. Dean lawsuit - 06/24/19 05:17 PM

Haven't looked into this case yet but I'd point out a couple things:
1 / Designs are not (TM)
The general shape of an item (car, bottle, etc) may not fall into a protected class.

2 / Long waits before addressing intellectual property issues can subvert a claim.
Posted By: p90jr

Re: The Gibson vs. Dean lawsuit - 06/24/19 06:36 PM

Danny, you're a lawyer, right? d, are you one, also?

The first story I saw about it mentioned in the first sentence that Gibson had filed a lawsuit "In the East Texas Circuit Court"... which... well, that's the cottage industry patent troll court... red flag right there, though I thought it had been curtailed a little bit because it had gotten so ridiculous

Bloomberg: The Town that Patent Trolls Built

Texas Monthly: Patently Unfair
Barack Obama and Antonin Scalia agree on one thing: the small East Texas town of Marshall may be the worst thing that ever happened to intellectual property law.
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/24/19 06:59 PM

Yep. I did some Entertainment Law/Copyright stuff for years, but never touched patent or trademark professionally. Watched some of it, though.

Gibson has sued a few times, with a poor track record. They lost on appeal in 2009 vs PRS over singlecut bodystyles. They lost to Fernandes in 2005 over several bodysyles. They won in 1977...on the limited issue of copied headstocks,

Fender likewise tried to get Strat and Tele bodies trademarked in the USA & Europe...and failed.

It’s like they’ve never heard of “legal precedent”.
Posted By: d / halfnote

Re: The Gibson vs. Dean lawsuit - 06/24/19 09:32 PM

Originally Posted by p90jr
Danny, you're a lawyer, right? d, are you one, also?

The first story I saw about it mentioned in the first sentence that Gibson had filed a lawsuit "In the East Texas Circuit Court"... which... well, that's the cottage industry patent troll court... red flag right there, though I thought it had been curtailed a little bit because it had gotten so ridiculous

Bloomberg: The Town that Patent Trolls Built

Texas Monthly: Patently Unfair
Barack Obama and Antonin Scalia agree on one thing: the small East Texas town of Marshall may be the worst thing that ever happened to intellectual property law.


I'm not an atty but I've paid attn to, as Joe Friday said, "The Facts....".
The statement I made above is based on general interpretation of what seem to be the pertinent facts.
1 / General design (the shape of a common object) is not exclusive----& even were it, it's not a (TM) issue nor one of patent (as, e.g. software or wiring might be).
2 / Long term neglect of protections often negates their invocation at a later date.

However, here, let's just see where it goes...............

Posted By: The Real MC

Re: The Gibson vs. Dean lawsuit - 06/24/19 09:40 PM

Headstock shapes, corporate names, and model names are protected under trademarks. As long as the company actively uses them, the trademarks do not expire.

Body shape of guitars cannot be trademarked, they are patented. Patents expire 14 years after a patent is awarded. You can't just patent a product unless it has novel feature(s) that benefits society. The body shapes of Explorers, Flying Vs, Modernes, Strats, et al have lost their patent protection long ago. Only their model names can be trademarked.

The "crown" of the Gibson headstock, like on Les Pauls, is trademarked because it is the standard design used on almost all Gibson guitars and its visual appearance uniquely identifies it as a Gibson product. Trademarks are intended to prevent brand name confusion. I don't think Gibson has a trademark on headstocks of Explorer/Flying V/Moderne because of the very limited use of the design in their product range, that's why they patented them.

Anybody can build and sell a guitar shaped like a Gibson Les Paul. As long as they don't call it a "Les Paul" (protected by trademark), don't use the name "Gibson" (some tried to evade with a slight change of spelling and lost), and don't copy the headstock shape (protected by trademark), they are free and clear.

There can be trademarks for the same name of different companies but their market is totally unrelated. A good example is Moog the synthesizer company, there is also a Moog company that manufactures auto parts. Both are trademarked and neither company is ever going to find brand name confusion from their products.
Posted By: d / halfnote

Re: The Gibson vs. Dean lawsuit - 06/24/19 09:45 PM

That may be true in general but in fact the design of most Gibson gtr heads is very trad &, I'd suspect, not protected as described.
Again, the lapse of action (over what---1/2 C?) may affect decisions.
....but let's see.
Posted By: Scott Fraser

Re: The Gibson vs. Dean lawsuit - 06/24/19 10:08 PM

If the Flying V is not trademarked, no case. If they haven't pursued an infringement case in the many decades people have been copying Flying V shapes, no case. What is there to argue?
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/25/19 01:00 AM

This is kind of like an animal’s threat display. Even if there’s no actual danger behind it, it may still be effective in warding off what the critter fears. But the threat has to be believable, and I don’t think anyone in the biz thinks Gibson can ultimately prevail.

However, unless this gets tossed quickly- like a summary judgement in the initial trial- it may be too expensive for some companies to defend their rights against Gibson, so they’ll just capitulate.

OTOH, if Dean’s attorneys do a really good job convincing the trial judge as to their position, it’s possible that Gibson & their attorneys get slapped with sanctions for bringing a frivolous lawsuit.

Get your popcorn ready!
Posted By: Larryz

Re: The Gibson vs. Dean lawsuit - 06/25/19 04:27 AM

It can be fun and profitable to go after the deep pockets when attacking the larger companies...It's not so fun, when they come after you LOL! I read on the Warmoth guitar parts site that they have a license to duplicate Strats, Teles, etc., necks headstocks and all. They know better than to put the Fender or Gibson logo on them though. I think Dean and other smaller companies would be wise to follow Warmoths lead, settle out of court, get licensed and share the wealth...just a thought. cool
Posted By: Caevan O'Shite

Re: The Gibson vs. Dean lawsuit - 06/25/19 05:20 AM



________ facepalm
Posted By: Lokair

Re: The Gibson vs. Dean lawsuit - 06/25/19 10:47 AM

Gibson the guitar company that will do everything to protect its Mismanaged Legacy but get down to the business of being a guitar company.

Lok

PS I will be buying anouther Dean flying Vee over the next year in support of Dean Guitars(i really hate that winged headstock, but that can be fixxed).
Posted By: Winston Psmith

Re: The Gibson vs. Dean lawsuit - 06/25/19 01:37 PM

I'm sure someone else in the Forum can elaborate on this, but in copyright law, there's a principle called "Primary Estoppel". (Yeah, I know, it doesn't quite look or sound like any language people really speak.) It means if you don't go after everybody who may conceivably be violating your trademark, you can't go after the most profitable targets. Why am I bringing this up? Because Dean Guitars have been out for a long damned time, and using that headstock design for quite a while. You think Gibson just noticed this last week, or when the new management team came in, saw Gibson bleeding $$$, and decided that the quickest way to grab some fast cash was to sue somebody.

If Gibson saw a serious trademark violation, it seems like it would have merited a lawsuit as soon as the violation took place, like Gibson essentially shutting down the first run of PRS Singlecuts, because they looked too much like Les Pauls. I think they'll be hard-pressed to make their case in court, because they may have waited to long to bring what seems to me like a weak case.

I wonder who's next on their hit list? Hamer, ESP, maybe The Heritage?
Posted By: Larryz

Re: The Gibson vs. Dean lawsuit - 06/25/19 02:09 PM

+1 Winsston, And there is "laches"...another legal term for waiting too long or lack of activity and diligence in making a legal claim. +1 Dean didn't start using the headstock design last week... but there is always a 50/50 chance of winning or losing if it goes to court. Sometimes it's less costly if you can reach an agreement and settle out of court. cool
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/25/19 03:10 PM

Each branch of IP Law is similar and overlapping, but with enough unique doctrines and requirements that things don’t necessarily translate across the divide.

Here’s a little Trademark Law that applies here:
Quote
To establish the affirmative defense of estoppel, which may bar all relief on a claim, a respondent must demonstrate: (1) that the trademark owner has engaged in some misconduct that leads the alleged infringer to reasonably believe that the trademark owner will not assert a claim; (2) that the respondent relied on the trademark owner’s misconduct; and (3) that the respondent has been materially prejudiced based on its reliance. Aukerman, 960 F.2d at 1040. The trademark owner’s misconduct “may include specific statements, action, inaction or silence where there was an obligation to speak.” Id. If a respondent points to a complainant’s silence or inaction as the basis for its estoppel defense, such “inaction must be combined with other facts respecting the relationship or contacts between the parties to give rise to the necessary inference that the claim against the defendant is abandoned.” Id., at 1042; accord Hemstreet v. Computer Energy Sys. Corp., 972 F.2d 1290, 1295 (Fed. Cir. 1992). However, “[e]ven where the three elements of equitable estoppel are established, the court must also ‘take into consideration any other evidence and facts respecting the equities of the parties in exercising its discretion and deciding whether to allow the defense of equitable estoppel to bar the suit.”’ Certain Sortation Systems, Parts Thereof, And Products Containing Same, Inv. No. 337-TA-460, Commission Opinion at 10 (February 3, 2003) (Sortation Systems), citing Aukerman, 960 F.2d at 1043


TL; DR: Estoppel is a legal defense that could completely bar a claim from going forward.

Estoppel is an affirmative defense, meaning the entity relying on it* has the burden of proof. That burden is a 3-prong test of IP holder misconduct, reliance on the misconduct, and that reliance greatly impeding the ability of the defendant to defend themselves against the claim.

But even if that burden is met, it isn’t an auto-win: the court still has to weigh other considerations.

All that combined with the previous results in similar cases tells me Gibson isn’t winning this one.

My guess is that- as suggested- new management saw this as a way to regain some control in the market. That they’re proceeding makes me feel they either got bad legal advice or aren’t listening to the advice they got.


* In a case like this, that would be Dean.
Posted By: d / halfnote

Re: The Gibson vs. Dean lawsuit - 06/25/19 06:28 PM

Originally Posted by Lokair
Gibson the guitar company that will do everything to protect its Mismanaged Legacy but get down to the business of being a guitar company.


There's some merit to that but when Gibson has tried to update it's gear there seemed to be little interest.
Folks seemed to just want them to make their standard 1950s gtrs, not a gtr w/self-adjusting tuning or various digital age innovations.
There's by no means anything wrong w/sticking to a great design but eventually all that gets overtaken by others making similar, less expensive items.
Posted By: desertbluesman

Re: The Gibson vs. Dean lawsuit - 06/25/19 06:37 PM

The classic Gibsons are very fine guitars, I think they should find a way to reasonably price them, manufacture them, and market them.

A company should not rest on their laurels and charge huge markups. Just because it is a classic guitar, they should like every other business price their product to meet market demand, instead of trying to sell at triple the cost of manufacturing costs.
Posted By: CEB

Re: The Gibson vs. Dean lawsuit - 06/26/19 01:02 AM

Aren't these or some of these guitars, models that my friend Dean Zelinsky began to producein the 70s? It seems like Gibson's biggest legal hurdle is they allowed 40 years to pass without filing a suit.
Posted By: p90jr

Re: The Gibson vs. Dean lawsuit - 06/26/19 04:15 AM

Originally Posted by Dannyalcatraz
This is kind of like an animal’s threat display. Even if there’s no actual danger behind it, it may still be effective in warding off what the critter fears. But the threat has to be believable, and I don’t think anyone in the biz thinks Gibson can ultimately prevail.

However, unless this gets tossed quickly- like a summary judgement in the initial trial- it may be too expensive for some companies to defend their rights against Gibson, so they’ll just capitulate.

OTOH, if Dean’s attorneys do a really good job convincing the trial judge as to their position, it’s possible that Gibson & their attorneys get slapped with sanctions for bringing a frivolous lawsuit.

Get your popcorn ready!


I think I read that Gibson has requested a Jury Trial... in East Texas Circuit Court... which...
Posted By: p90jr

Re: The Gibson vs. Dean lawsuit - 06/26/19 04:41 AM

Also... I mean there was "low level patent trolls"... people who'd get a patent on something like "windows" and then file suit against every company that manufactures windows...

But then "legit" business types got in on it, seeking out small companies that had never gone after competitors or other businesses that had long used things they had a patent or claim on and buying them JUST to file suits and make money.

An example of this actually crosses into the music world: The band Men At Work's flutist had subconsciously put a bit of the melody of the Australian children's song "Kukaburro" into the flute riff in "Down Under" without realizing it and it was a while before anybody noticed the similarity. The woman who wrote the song - who wrote it for a contest for their version of the Girl Scouts long ago - when informed of it thought it was a nice tribute and had no interest in suing them. She died in the late 90s, a company approached her family and offered them what seemed like a lot of money for a song that had never made much in royalties from formal recordings and was a few years away from entering the public domain so they took it. That company instantly sued Men at Work for millions for the similarity... and won... and the flutist killed himself in his resulting depression.
Posted By: Winston Psmith

Re: The Gibson vs. Dean lawsuit - 06/26/19 01:58 PM

Originally Posted by CEB
Aren't these or some of these guitars, models that my friend Dean Zelinsky began to producein the 70s? It seems like Gibson's biggest legal hurdle is they allowed 40 years to pass without filing a suit.


See back to my point about "Primary Estoppel". If they wanted to sue, they should have filed way back when . . . I can't imagine that no one from Gibson ever saw a Dean Guitar at a trade show, a concert, or wherever, in the last 40+ years.

As Dannyalcatraz points out - many thanks to Dannyalcatraz & Larryz for illuminating some of the fine points of the law, BTW - if Dean chooses Primary Estoppel as a defense, the burden is on Dean to prove that Gibson was aware of the alleged trademark infringements, and did nothing to protect their trademark until now. I think 40+ years worth of ads in Guitar magazines, 40+ years of Dean Guitars hanging on the same store racks as Gibsons, essentially 40+ years of Gibson ignoring the issue, gives Dean a strong defense, or conversely, leaves Gibson without a legal leg to stand on. Even speaking as a life-long Gibson player, and one who hopes the company will finally rise above itself, I'd throw this case out in a New York minute, and give Gibson hell for wasting the Court's time.
Posted By: Larryz

Re: The Gibson vs. Dean lawsuit - 06/26/19 01:58 PM

Originally Posted by p90jr

I think I read that Gibson has requested a Jury Trial... in East Texas Circuit Court... which...


@ P90, This is what Dean does not want to see happen and why they should try for some sort of settlement. You never know what monetary damages a jury may level upon you. They are most likely not going to be a jury of our peers (i.e. knowledgeable and sympathetic guitar players LOL!). They may fall for Gibson's patent trolling. I can see guarding your logo and even your headstock design as part of that logo on different models. As I pointed out in an earlier post, Warmoth has a license to duplicate all of the vintage model Gibson and Fender headstocks. Dean could do something similar and avoid the trial by offering a compromise. We'll see... snax

+1 Winston, Dean better hope the judge throws the case out and prevents it from going to a jury (if that's possible?). thu
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/26/19 03:22 PM

The damages would be statutorily capped.

Even if Gibson gets a win in district court, Dean is probably big enough to bankroll at least one appeal.
Posted By: p90jr

Re: The Gibson vs. Dean lawsuit - 06/26/19 03:55 PM

I was curious about other companies and looked at their websites... Hamer seems to have stopped making the Standard (Explorer) and Vector (Flying V) models this year, after making them as part of the re-launched import line. I wonder if they adhered to a cease and desist?
Posted By: Fred_C

Re: The Gibson vs. Dean lawsuit - 06/26/19 04:04 PM

@P90:

Is Hamer back in business?

They used to make some nice guitars like the Monaco and the Newport.
Posted By: p90jr

Re: The Gibson vs. Dean lawsuit - 06/26/19 04:52 PM

Hamer was resurrected after being gone just a couple of years, but only the South Korean-made imports, not the USA-made models... which, as in the case of Guild, seems wrong to me for some reason considering the legacy.

http://www.hamerguitars.com/
Posted By: Fred_C

Re: The Gibson vs. Dean lawsuit - 06/26/19 04:56 PM

Originally Posted by p90jr
Hamer was resurrected after being gone just a couple of years, but only the South Korean-made imports, not the USA-made models... which, as in the case of Guild, seems wrong to me for some reason considering the legacy.

http://www.hamerguitars.com/


Agreed.
Posted By: Winston Psmith

Re: The Gibson vs. Dean lawsuit - 06/26/19 09:36 PM

Just wondering, at what point does the phrase, "Frivolous lawsuit" come into play?
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/27/19 12:51 AM

When the judge says so...

I mean, there may be speculation behind the scenes, the press or even on a forum like this, but it don’t mean squat if the judge thinks the allegations have merit.
Posted By: p90jr

Re: The Gibson vs. Dean lawsuit - 06/28/19 06:39 PM

GIBSON LOSES FLYING V TRADEMARK CASE IN EU COURT

"... when the application for registration of the challenged mark was filed, the V-shape did not depart significantly from the norms and customs of the sector.”

The case dates back all the way to 16 June 2010, when Gibson filed a patent application for the Flying V with the European Union Intellectual Property Office (EUIPO), which was initially granted. However in October 2014 Hans-Peter Wilfer, the owner of Warwick and Framus, challenged the registration of the mark in respect to musical instruments.


By 2010 the world was flush with V-shaped instruments... simply put, too late. Despite what Gibson fanboys argue exhaustively online, the American trademark they applied for is from this same time frame (2010), not 1958, which was a patent application, not a trademark application, and even then shapes can't be patented as they exist in nature and mathematics already and no one can "invent them," the same reason why you cannot copyright chord progressions.
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/29/19 12:01 AM

From the same article:

Quote
Gibson appealed and lost in 2018, and then took its appeal to the EU General Court, where a panel of three judges dismissed Gibson’s second appeal, and ordered them to pay costs.

That last phrase is important. The EU Court is sending a message: “You have wasted everyone’s time & money. Bad company!”*
Quote
Furthermore, Gibson also holds trademarks for the Flying V in some individual EU countries, and it still holds the US trademark to the Flying V body shape.


This is probably part of why they think they have a leg to stand on.





* and they can’t deny it...
Posted By: CEB

Re: The Gibson vs. Dean lawsuit - 06/30/19 03:43 PM

I can't bring myself to being too sympathetic for Dean. There is some weirdness that went along with this new Dean company. I was talking to Dean Zelinsky after he started DBZ. Armadillo bought the Dean name in the 90s. Nothing against Elliot Rubinson, I did a lot of business with him when he owned Thoroughbred Music but Elliot started calling himself Dean Rubinson and tried to completely expunge Dean Zelinsky from the history of Dean Guitars. That whole situation was just weird.

I kind of miss Thoroughbred Music. I bought a lot of road cases from them.
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 06/30/19 04:18 PM

Quote
...Elliot started calling himself Dean Rubinson...


That is weird.
Posted By: Caevan O'Shite

Re: The Gibson vs. Dean lawsuit - 07/01/19 12:01 AM

Originally Posted by Dannyalcatraz
Quote
...Elliot started calling himself Dean Rubinson...


That is weird.


Very...
Posted By: d / halfnote

Re: The Gibson vs. Dean lawsuit - 07/01/19 02:08 PM

It's planet Earth.
Everything here, while we accept it b/c we grew up, is weird
Posted By: CEB

Re: The Gibson vs. Dean lawsuit - 07/25/19 01:00 AM

Originally Posted by Winston Psmith
Originally Posted by CEB
Aren't these or some of these guitars, models that my friend Dean Zelinsky began to producein the 70s? It seems like Gibson's biggest legal hurdle is they allowed 40 years to pass without filing a suit.


See back to my point about "Primary Estoppel". If they wanted to sue, they should have filed way back when . . . I can't imagine that no one from Gibson ever saw a Dean Guitar at a trade show, a concert, or wherever, in the last 40+ years.

As Dannyalcatraz points out - many thanks to Dannyalcatraz & Larryz for illuminating some of the fine points of the law, BTW - if Dean chooses Primary Estoppel as a defense, the burden is on Dean to prove that Gibson was aware of the alleged trademark infringements, and did nothing to protect their trademark until now. I think 40+ years worth of ads in Guitar magazines, 40+ years of Dean Guitars hanging on the same store racks as Gibsons, essentially 40+ years of Gibson ignoring the issue, gives Dean a strong defense, or conversely, leaves Gibson without a legal leg to stand on. Even speaking as a life-long Gibson player, and one who hopes the company will finally rise above itself, I'd throw this case out in a New York minute, and give Gibson hell for wasting the Court's time.


My original post I found out is irrelevant. Talked to a friend last weekend. The body shapes were actually nothing. Henry's crew initiated the lawsuits because in 2015 Dean started selling an acoustic guitar they called the Hummingbird. Dean didn't cease that stuff so when Gibson sued they put together the biggest list of items they could file suits on. Not sure if throwing everything including the kitchen sink at Dean when you only had two original beefs is the right strategy or not. I guess that is a lawyer thing.
Posted By: Winston Psmith

Re: The Gibson vs. Dean lawsuit - 07/25/19 07:26 PM

I wonder if Dean had backed down on the Hummingbird - which seems like the sensible move - would Gibson have proceeded with the suit?
Posted By: Dannyalcatraz

Re: The Gibson vs. Dean lawsuit - 07/25/19 08:40 PM

Probably not. Once the main objective is achieved, few want to spend the extra $$$ to get a judgement...and thereby establish precedent.

Besides being costly, It’s also risky. It’s always possible you won’t win for some reason. After all, unlike “Stratocaster” or “Les Paul”, “hummingbird “ is a common enough word that a court might decide there’s no way to claim a protectable interest in that as a product name.
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